FEDERAL COURT OF AUSTRALIA

Foxtel Management Pty Limited v Registrar of Trade Marks [2019] FCA 605

ORDERS

THE COURT ORDERS THAT:

1.    The application be dismissed.

2.    The Applicant pay the Respondent’s costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BURLEY J:

1.    INTRODUCTION

1    The applicant, Foxtel Management Pty Limited seeks judicial review of a decision made by the respondent, the Registrar of Trade Marks, declining to revoke trade mark No. 1813459 registered in classes 9, 16, 35, 38, 41, 42 and 45 of the Trade Marks Register for the word “CUniQ” (trade mark), which is owned by China Unicom Global Limited. The decision of the Registrar involves the application of s 84A of the Trade Marks Act 1995 (Cth).

2    Unicom filed an application to register the trade mark on 3 December 2016 and it was advertised as accepted on 29 June 2017. Foxtel wished to oppose the application and through its lawyers, Allens, attempted to file a notice of intention to oppose on 29 August 2017, which was the last day permitted by the operation of s 52 of the Act, and the Trade Marks Regulations 1995 (Cth). However, the electronic filing went awry and, in the circumstances detailed below, it was not received within time. As a consequence the trade mark was entered in the Register on 6 September 2017. On 8 September 2017 Foxtel asked the Registrar to revoke the registration pursuant to s 84A of the Act, but by email dated 31 October 2017 (decision) she notified Foxtel that she declined to do so.

3    In its Amended Originating Application for Relief, Foxtel seeks orders setting aside the decision and an order that the matter be remitted for consideration in accordance with the law, pursuant to s 39B of the Judiciary Act 1903 (Cth) and the terms of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (AD (JR) Act). Although other grounds were pleaded, at the hearing Foxtel limited its claim to relief to the following grounds.

4    First, that there was a breach in the rules of natural justice in connection with the making of the decision on the bases: (a) that the registration of the trade mark and the decision amounted to a denial of natural justice in that Foxtel was prevented from exercising its rights under s 52 of the Act; and (b) Foxtel was not given an opportunity to respond to the arguments of Unicom.

5    Secondly, that the making of the decision was an improper exercise of the power conferred by s 84A of the Act because it was so unreasonable that no reasonable person could have so exercised the power.

6    Thirdly, that the decision involved an error of law because the Registrar construed s 84A of the Act too narrowly, including with respect to the purported purpose and intended scope of the section.

7    Foxtel was represented at the hearing by Mr Neil Murray of counsel. The Registrar was represented by the Australian Government Solicitor (AGS). Unicom did not seek to participate at the hearing. Both parties filed written submissions in advance of the hearing.

2.    FACTUAL BACKGROUND

8    Foxtel relies upon a Statement of Agreed Facts and an affidavit sworn by Kimberley Jade Evans, a solicitor and registered trade mark lawyer at Allens. The Registrar relies upon an affidavit affirmed by Joshua McEwan Beale, solicitor with the AGS. The relevant facts are substantially not in dispute, and may be summarised as follows.

9    On 25 August 2017, Allens received instructions from Foxtel to prepare a notice of intention to oppose the trade mark application, but only file it on the last day of the opposition period, being 29 August 2017.

10    On the morning of 29 August 2017, Allens received instructions from Foxtel to proceed with the filing. Ms Evans instructed her legal secretary to file the notice of intention through eServices. The secretary immediately took steps to carry out those instructions and after doing so downloaded a transaction receipt, also saving it to her computer desktop as 'receipt -NOITO'. The secretary then sent an email to Ms Evans and her supervising partner at Allens, letting them know that the notice of intention had been filed with IP Australia.

11    On 8 September 2017, Ms Evans received a telephone call from an in-house lawyer at Foxtel alerting her to the fact that the trade mark application had proceeded to registration. Ms Evans checked the Register and noted that, as at 8 September 2017, there was no record of a notice of intention having been filed. Her secretary then checked her files and the transaction receipt. As it turned out, the receipt was not for the lodgement of the notice of intention but concerned a different transaction altogether. Subsequent review of the electronic log provided by IP Australia indicates that although the process for filing the notice of intention had been commenced, the payment had not been received and lodgement had timed out before the filing was complete.

12    Also on 8 September 2017, Allens wrote to the Registrar, enclosing:

(a)    a notice of intention;

(b)    declarations from Ms Evans and her legal secretary explaining the circumstances of the failed attempt to file the notice of intention;

(c)    a document entitled “opponent’s arguments in support of late request for an extension of time to oppose” which included reasons in support of an application to extend the time to oppose and also a “late extension request”;

(d)    a letter entitled “Request for Revocation of Registration under sections 84A and 84B”. In it, Allens provided a short submission in support of its requests. In summary, it contended that on 29 August 2017 it had filed a notice of opposition but for unknown reasons IP Australia’s eServices had aborted the payment transaction for the fees with the result that the notice was not successfully filed. The employee responsible for the filing was not aware that the transaction had been aborted with the result that Allens reported to Foxtel that it had been successfully filed. On 8 September 2017 Foxtel learnt of the problem. Allens submitted that but for IP Australia’s eServices aborting the filing, the trade mark would have been successfully opposed under s 52(2) of the Act and would not have proceeded to registration. It followed, Allens submitted, that the trade mark should be revoked pursuant to s 84A of the Act. At all times Foxtel had intended to oppose the application and had taken all steps possible to do so.

13    On 26 September 2017, Allens also filed a Statement of Grounds and Particulars on behalf of Foxtel in support of Foxtel's intended opposition to the trade mark application (assuming that revocation was granted).

14    On 28 September 2017, Ms Cristy Condon, Acting Deputy Registrar of Trade Marks, wrote to the trade mark attorneys for Unicom, Gestalt Law Pty Ltd. The letter was entitled “Proposal to revoke registration” and stated:

It has come to my attention that before this trade mark was registered, Allens Patent and Trade Mark Attorneys (‘Allens’) attempted to file a notice of intention to oppose (‘NIO’) on behalf of Foxtel Management Pty Ltd. On 29 August 2017, Allens proceeded to file the NIO using the eServices portal however the transaction was aborted whilst payment was being taken and as a consequence the NIO was not received by IP Australia.

In light of the attempt to file a NIO within the opposition period, the decision to register the trade mark amounts to a denial of natural justice and an improper exercise of discretionary power. The trade mark should therefore not have been registered.

A third party has clearly indicated their intention to oppose. The lack of such intention, or its resolution, is one of the conditions which must be met prior to registration. It is arguable therefore following Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 209 CLR 597 and British Sky Broadcasting Limited v The Registrar of Trade Marks (2002) FCA 1556, that the registration is a nullity.

As a consequence I now propose to revoke registration under section 84A of the Trade Marks Act 1995.

I will allow you until 28 October 2017 to advise me of any circumstances which I should take into account before I revoke the registration of this trade mark. You may also request to be heard on this matter within this time frame. A hearing request must be accompanied by the hearing fee of $400. However, if you agree to the revocation beforehand or no response is received within this time, registration will be revoked and the opposition process will commence.

15    Also on 28 September 2017, the Registrar wrote to Allens, providing it with a copy of the letter referred to above, and stating:

I refer to your request to revoke registration received on 8 September 2017.

…

In accordance with section 84A of the Trade Marks Act 1995, I intend to revoke registration of the trade mark.

I am attaching a copy of my letter to the agent for the owner of the registered mark for your information.

Your request for an extension of time to file the notice of intention to oppose will be assessed if registration is revoked.

16    In a letter dated 26 October 2017 and entitled “Response to request for revocation”, Gestalt provided submissions to the Registrar arguing against the revocation of the trade mark (Gestalt submissions). These were not provided to Allens or Foxtel, which is a basis for Foxtel’s procedural fairness argument that I discuss in more detail below.

17    By way of summary, the Gestalt submissions address two matters that are presently relevant. First, they include submissions about the factual circumstances surrounding the handling of the opposition, contending that it was solely the fault of Allens and Foxtel. In particular, the submissions note that they had waited until the final deadline to file the notice of opposition, and that “[f]or experienced professional users of IP Australia’s eServices system, something is not regarded as ‘filed’ until and unless a filing receipt is issued” and “[a]ccording to reasonable professional standards, an attorney filing the opposition on the actual day of the opposition deadline would know that it would be prudent to ensure for the official financial receipt as confirmation of compliance with the deadline”.

18    Secondly, the Gestalt submissions contend that the present circumstances did not fall within the scope of s 84A of the Act because, whilst expressed in broad terms, the provision is not designed to address the error or omission on behalf of a potential opponent’s attorneys. The submissions most relevantly state (emphasis in the original):

In particular, the Explanatory Memorandum makes it clear that the reforms in sections 84A and 84B dealing with revocation of registration are intended to address errors or omissions on the part of the Registrar. Sections 84A and 84B are not intended to deal with Attorney or Applicant error or omission.

Extracts from the Explanatory Memorandum are then set out, with certain passages emphasised. The letter continues:

It is abundantly clear from paragraph 48 of the Explanatory Memorandum, that section 84A is not intended to apply in the current situation. In light of this explicit statement on the intention of the statutory provision, any decision by the Registrar to revoke revocation in the present circumstances would be completely contrary to the purpose of section 84A.

19    On 31 October 2017, the Registrar sent an email conveying the decision to Allens. It said:

I refer to trade mark registration no 1813459 and your request for revocation of registration dated 8 September 2017.

I have discussed these reasons with Assistant General Manager Bronwen Shelley and, after further consideration of your reasons in support, we find it is not reasonable to revoke the registration.

I have taken into account all of the circumstances and find that the discretionary power to revoke registration under s84A should not be exercised in the present circumstances.

Please also note that the provisions of section 84B do not apply in the present circumstances.

20    On 1 November 2017, Ms Evans telephoned the Registrar to ask whether the decision not to revoke the registration of trade mark number 1813459 was due to the Gestalt submissions. Ms Evans’ evidence is that the Registrar responded with words to the effect of “Gestalt’s submissions influenced the change of position”. During the call, Ms Evans requested a copy of the Gestalt submissions. The Registrar declined to one on the basis that there was no opposition in place, and therefore Foxtel was not a party to any proceedings.

21    On 6 November 2017, Allens filed a request under s 217A of the Act for a copy of the Gestalt submissions, and received a copy on 8 November 2017. Foxtel subsequently filed its Originating Application for Judicial Review on 27 November 2017.

22    Foxtel submits that three inferences should be drawn from the facts set out above. First, that the Registrar took account of the Gestalt submissions. Secondly, that the submissions were “highly influential” on the decision. Thirdly, not only were the Gestalt submissions in relation to the statutory construction of s 84A incorrect, but the Registrar was led into error as a matter of law on the basis of those incorrect submissions.

3.    THE TRADE MARKS ACT

23    The High Court considered the scope and purpose of the Trade Marks Act 1955 (Cth) (1955 Act) in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12; 202 CLR 45, observing that it struck a balance between various disparate interests. At [42] the Court observed:

… [T]he Australian legislation has manifested from time to time a varying accommodation of commercial and the consuming public’s interests. There is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. There is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning this property to valuable account by licensing or assignment.

24    That statement has been endorsed in the context of the present Act: JT International SA v Commonwealth of Australia [2012] HCA 43; 250 CLR 1 at [30] (French CJ), [68] (Gummow J). The balance of interests between consumers, who will see and rely upon trade marks, and the goodwill developed by the traders who use them, is struck by the various provisions of the Act.

25    Part 3 of the Act concerns trade marks and trade mark rights. Section 17 provides that a trade mark is a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

26    Part 4 of the Act provides for the making of an application for registration, and includes within Division 2 the grounds for rejecting an application which include: that the trade mark is not capable of distinguishing, or not in fact distinguishing, the applicant’s goods or services in respect of which the trade mark is sought to be registered (s 41); that the trade mark is likely to deceive or cause confusion (s 43); and that the trade mark is substantially identical with, or deceptively similar to another trade mark already on the register (s 44).

27    Part 5 provides that a person may oppose the registration of a trade mark on any of the grounds set out in Division 2 of Part 4 (apart from the ground that the trade mark cannot be represented graphically) and also on the grounds: that the applicant is not the owner of the trade mark (s 58); that the opponent has earlier used a similar trade mark (s 58A); that the applicant does not intend to use the trade mark (s 59); that the trade mark is similar to a trade mark that has acquired a reputation in Australia (s 60); that the trade mark contains or consists of a false geographical indication (s 61); and that the application is either defective (s 62) or made in bad faith (s 62A).

28    The process by which a person may set about opposing the registration of a trade mark is set out in Division 1 of Part 5. Section 52 provides that if the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition, which must be filed in accordance with the Regulations, both as to form and as to timing. Provision is made within s 52(2) for the prescribed period within which to file a notice of opposition to be extended.

29    Regulation 5.6 of the Regulations provides that a person may file a notice of intention to oppose a trade mark application within 2 months of the publication in the Official Journal of the acceptance of the trade mark application. Regulation 5.9 provides that a request may be made to extend the period for filing a notice of intention to oppose a trade mark application within the period for filing the document, or before the trade mark is entered on the Register.

30    Section 55 provides that unless opposition proceedings are discontinued, dismissed or lapse, the Registrar must, at their end, decide to refuse to register the trade mark or register the trade mark (with or without conditions or limitations) in respect of the goods or services specified in the application, having regard to the extent to which any ground on which the application was opposed has been established.

31    Section 56 states that an applicant or an opponent may appeal to the Federal Court or the Federal Circuit Court from a decision of the Registrar made under s 55 of the Act.

32    Section 68(1) of the Act provides that the Registrar must, within the period provided under the Regulations, register a trade mark that has been accepted if there has been no opposition or, in the case where there has been an opposition, if the opposition is unsuccessful or does not proceed. Regulation 7.1 states that the relevant period is within 6 months of the day on which acceptance of the trade mark application is advertised in the Official Journal.

33    Part 8 of the Act deals with amendment, cancellation and revocation of registration. Division 1 concerns Action by the Registrar and Subdivision C is entitled “Revoking Registration”.

34    Section 84A provides:

84A Registration may be revoked

Power to revoke

(1)     The Registrar may revoke the registration of a trade mark if he or she is satisfied that:

(a)     the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered (whether or not the Registrar knew then of their existence); and

(b)     it is reasonable to revoke the registration, taking account of all the circumstances.

(2)     The circumstances to be taken into account under paragraph (1)(a) include the following:

(a)     any errors (including errors of judgment) or omissions that led directly or indirectly to the registration;

(b)     any relevant obligations of Australia under an international agreement;

(c)     any special circumstances making it appropriate:

(i)     not to register the trade mark; or

(ii)    to register the trade mark only if the registration were subject to conditions or limitations to which the registration was not actually subject.

(3)     The circumstances to be taken into account under paragraph (1)(b) include the following:

(a)     any use that has been made of the trade mark;

(b)     any past, current or proposed legal proceedings relating to the trade mark as a registered trade mark or to the registration of the trade mark;

(c)     other action taken in relation to the trade mark as a registered trade mark;

(d)     any special circumstances making it appropriate:

(i)     to revoke the registration; or

(ii)    not to revoke the registration.

Note:        For use of a trade mark see section 6.

Prerequisites to revocation decision

(4)     The Registrar may revoke the registration of the trade mark only if the Registrar gives notice of the proposed revocation to each of the following persons in accordance with the regulations within 12 months of registering the trade mark:

(a)     the registered owner of the trade mark;

(b)     any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note:        For registered owner see section 6.

(5)     The Registrar must not revoke the registration of the trade mark without giving each of the following persons the opportunity to be heard:

(a)     the registered owner of the trade mark;

(b)     any person recorded under Part 11 as claiming a right in respect of, or an interest in, the trade mark.

Note:        For registered owner see section 6.

No duty to consider whether to revoke

(6)     The Registrar does not have a duty to consider whether to revoke the registration under this section, whether or not the Registrar is requested to do so.

35    Division 2 of Part 8 of the Act is entitled “Action by court” and includes provisions whereby a prescribed court may order that the Register be rectified by correcting or cancelling the Register. Section 88 provides that on application by an aggrieved person, a prescribed court may order that the Register be rectified.

36    In Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [22] (French CJ, Gummow, Heydon and Bell JJ) observed that the “legislative scheme of the Act reveals a concern with the condition of the Register”, and in particular that it have “integrity” and be “pure”. It was said to be a "public mischief" if the Register is not pure, for there is "public interest in [its] purity".  The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied. The Court said:

23.    This concern and this interest are reflected in the following scheme.  If an application is made to have a mark registered which does not meet the criteria for registration, there are two opportunities for registration to be prevented.  And if a mark has been registered which does not meet the criteria for remaining on the Register, a further opportunity exists to have the Registrar adjust it. 

24.       The first opportunity arises when an application is lodged.  Section 31 of the Act creates a duty on the Registrar to examine and report on whether the application has been made in accordance with the Act, and whether there are grounds under Pt 4 Div 2 for rejecting it.  The Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or there are grounds for rejecting it (s 33). 

25.        Even if the application is accepted, a second opportunity arises.  Section 34 creates a duty on the Registrar to advertise the decision to accept the application in the Official Journal of Trade Marks.  This enables those who wish to oppose registration to do so pursuant to s 52 of the Act.  Section 52 has no standing requirement.  If opposition proceedings are not brought, or if they fail, the trade mark is registered (s 68). 

26.      However, a third opportunity to ensure the purity of the Register arises, for recourse can be had to s 88 or s 92.  Those sections require applicants under them to be "aggrieved".  It is not the case that any applicant who wants the Register rectified or a mark removed is "aggrieved" merely by reason of that desire:  the word has a filtering function.  But against that legislative background, it is not clear why the word should be construed restrictively rather than liberally. 

4.    BREACH OF THE RULES OF NATURAL JUSTICE

4.1    Summary of the arguments

37    Foxtel contends that the Registrar breached the rules of natural justice by failing to give it an opportunity to respond to the arguments of Unicom as set out in the Gestalt submissions.

38    Foxtel submits that there is a strong presumption that any statutory power, the exercise of which is capable of having an adverse effect on legally recognised rights or interests, must be exercised in accordance with the dictates of procedural fairness. It submits that the scheme of the Act is such that an opponent has a right to oppose a trade mark application. The evident purpose of s 84A of the Act is to allow the revocation of the registration of a trade mark in circumstances where the mark should not have been registered, considering any errors or omissions that led to the registration, and revocation is reasonable in all of the circumstances. It submits that Section 84A operates to protect the rights of people who potentially would be adversely affected by an improper registration. In the present case, Foxtel submits that the content of the obligation to afford procedural fairness extends to the Registrar giving Foxtel an opportunity to receive and respond to the submissions that were made by Unicom in opposition to the revocation of the trade mark registration.

39    The Registrar disputes the existence of an obligation to afford procedural fairness to Foxtel. She submits that if she decides to consider whether to revoke a registration under s 84A (which she has no duty to do - s 84A(6)), then subsection 84A(5) only requires her to give the registered trade mark owner and the persons listed in s 84A(5)(b) (which are in fact recorded in Part 11 of the Act) an opportunity to be heard. These are the only persons to whom the Registrar owes an obligation to afford procedural fairness or natural justice. She submits that [45] to [49] of the explanatory memorandum to the Intellectual Property Laws Amendment Bill 2006 (Cth) support this construction. Furthermore, she submits that the fact that an applicant may have standing in the present application does not mean that the Registrar owed a duty to afford Foxtel procedural fairness. In addition, the Registrar submits that even if the duty arises, it did not extend to an obligation to provide Foxtel with a copy of the Gestalt submissions. She submits that there is no basis upon which the Court would infer that the submissions on the construction of the Act was the reason for the Registrar’s decision. The Registrar’s email of 31 October 2017 provided no basis for drawing such an inference. She submits that the decision indicated nothing other than that she considered that she had power to exercise a discretion under s 84A and that she determined that it would not be reasonable to do so in all of the circumstances. There was, she submits, no critical issue arising from the Gestalt submissions on which Foxtel should have been asked to comment on, and no unfairness to Foxtel in not doing so.

4.2    Consideration

40    I find that the Registrar was obliged to afford procedural fairness to Foxtel, but Foxtel has not established that the failure to provide it with a copy of the Gestalt submissions amounted to a material breach of the requirements of procedural fairness.

41    I first turn to the obligation to afford procedural fairness. Foxtel relies on s 5(1)(a) of the AD(JR) Act which provides:

5 Applications for review of decisions

(1)     A person who is aggrieved by a decision to which this Act applies that is made after the commencement of this Act may apply to the Federal Court or the Federal Circuit Court for an order of review in respect of the decision on any one or more of the following grounds:

(a)     that a breach of the rules of natural justice occurred in connection with the making of the decision.

42    Section 5(1)(a) does not extend the rules of natural justice beyond their common law application; Kioa v West [1985] HCA 81; 159 CLR 550 at 566, 577, 594.

43    In Annetts v McCann [1990] HCA 57; 170 CLR 596, Mason CJ, Deane and McHugh JJ said at [2]:

It can now be taken as settled that, when a statute confers power upon a public official to destroy, defeat or prejudice a person’s rights, interests or legitimate expectations, the rules of natural justice regulate the exercise of that power unless they are excluded by plain words or necessary intendment … an intention on the part of the legislature to exclude the rules of natural justice [is] not to be assumed nor spelled out from ‘indirect references, uncertain inferences or equivocal considerations’.”

(Citations omitted)

44    In State of South Australia v Honourable Peter Slipper MP [2004] FCAFC 164; 136 FCR 259 Finn J said at [93] (Branson and Finkelstein JJ agreeing):

There is no real dispute between the parties as to the principles to be applied. The parties diverge on the principles’ application to the present circumstances.  Stated in short form those principles are:

(i)     when a statute confers a power on a public official the exercise of which affects a person’s rights, interests or expectations, the rules of procedural fairness regulate the exercise of that power unless those rules are excluded by express terms or by necessary implication:  Kioa v West (1985) 159 CLR 550 at 584;  Re Minister for Immigration & Multicultural Affairs;  Ex parte Miah (2001) 206 CLR 57 at 93;  on “necessary implication”, see B v Auckland District Law Society [2004] 1 NZLR 326 at 349;

(ii)     a legislative intention to exclude the rules will not be assumed or spelled out from indirect references, uncertain inferences or equivocal considerations:  Commissioner of Police v Tanos (1958) 98 CLR 383 at 396;

(iii)     an intention to exclude should not be inferred merely from the presence in the statute of rights which are commensurate with some of the rules of procedural fairness:  Annetts v McCann (1990) 170 CLR 596 at 598;  and

(iv)     while the rules may be excluded because the power in question is of its nature one to be exercised in circumstances of urgency or emergency:  Marine Hull and Liability Insurance Co Ltd v Hurford (1985) 10 FCR 234 at 241;  “urgency cannot generally be allowed to exclude the right to natural justice”:  Minister for Aboriginal and Torres Strait Islanders Affairs v State of Western Australia (1996) 67 FCR 40 at 59;  although it may in the circumstances reduce its content: J Wattie Canneries Ltd v Hayes (1987) 74 ALR 202 at 214;  State of Western Australia v Native Title Registrar (1999) 95 FCR 93.

45    In Plaintiff M61/2010E v The Commonwealth [2010] HCA 41; 243 CLR 319 at [75] the Court said:

It is enough to say that the references in Annetts to "prejudice", "interests" and "legitimate expectations" suggest that the contrast which the Commonwealth and the Minister sought to draw between destruction, defeat or prejudice of a right, on the one hand, and a discretionary power to confer a right, on the other, proceeds from too narrow a conception of the circumstances in which an obligation to afford procedural fairness might arise.  The more comprehensive statement of principle by Mason J in FAI Insurances Ltd v Winneke sufficiently answers the submissions by the Commonwealth and the Minister.  His Honour said that the obligation to afford procedural fairness is not limited to cases where the exercise of the power affects rights in the strict sense, but extends to the exercise of a power which affects an interest or a privilege.  It is then important, in the present matters, to identify the rights and interests affected.

46    More recently in S10/2011 v Minister for Immigration and Citizenship [2012] HCA 31; 246 CLR 636 at [66], Gummow, Hayne, Crennan and Bell JJ said that the question is whether the exercise of a power is “apt to affect adversely what is a sufficient interest” of the party affected.

47    The Registrar accepts that Foxtel had an “interest” in the outcome of the revocation decision, but contends that it was not sufficient to lead to an obligation to afford procedural fairness. First, because the language of s 84A(5) reflects the entire scope of the obligation, which is not owed to a party in the position of Foxtel, but to the persons recorded in Part 11. Those are persons whose interests are affected by a decision to revoke the registration. Secondly, because in any event, the Registrar has no duty under s 84A(6) to consider making a decision.

48    In my view the scheme of the Act and the language of s 84A confers power on the Registrar to affect the rights of Foxtel sufficiently to warrant a finding that the rules of natural justice regulate the exercise of that power. Foxtel intended to be in the position of an opponent to the registration of the trade mark. The Act provides a scheme whereby such persons may oppose a mark, and doing so is encouraged as part of the public good that arises from the register containing only trade marks that are legitimately entitled to be registered; Health World at [22]. Whilst Foxtel is not now an opponent, the reason that it is not is because of the circumstances summarised above, in short because its agent made an error in the process of filing the notice of intention.

49    Section 84A contemplates that the Registrar may revoke a trade mark registration in circumstances where the trade mark should not have been registered. Sections 54 and 55 of the Act make plain that a trade mark must not be registered where an opposition is on foot, and where the Registrar has not given the opponent and the applicant an opportunity to be heard on the opposition. The “interest” of Foxtel is in persuading the Registrar that, in all the circumstances that existed when the trade mark was registered, the trade mark should not have been because, but for the error in filing the notice of intention to oppose there would have been an opposition on foot at the time of registration (s 84A(1)). In my view this is a form of possible adverse affectation that is sufficient to qualify as an interest to attract the protection of the rules of procedural fairness.

50    Although s 84A(5) only specifies the registered trade mark owner, and other persons recorded under Part 11, as the persons that must be given an opportunity to be heard before a decision to revoke registration, it does not in turn follow that Foxtel do not have a right to procedural fairness. The principles of procedural fairness may excluded only by “plain words of necessary intendment”: Plaintiff M61 at [74]. An “intention to exclude the rules of natural justice is not to be inferred from the presence in the statute of rights which are commensurate with some of the rules of natural justice”; Annetts at [2]. No such clear expression of intention to exclude is present in s 84A.

51    Furthermore, the fact that under s 84A(6) the Registrar is not obliged to make any decision under s 84A does not serve to avoid the existence of the obligation to afford procedural fairness. Having decided to consider the exercise of power under s 84A, the obligation to ensure that the assessment conducted under that section is procedurally fair arises; Plaintiff M61 at [77].

52    The question then arises as to the content of the obligation in the present case.

53    During the course of considering the exercise of her power, the Registrar invited Unicom to make submissions on the subject. Unicom, via Gestalt, then made a 5 page submission (the Gestalt submissions) in which it contended, after setting out extracts of the Explanatory Memorandum of the Act, that it was “abundantly clear that s 84A is not intended to apply in the current situation” and that it would be contrary to the purpose of the section to revoke the trade mark. It also made detailed submissions going to the facts of the present case.

54    Foxtel submits that the Court should infer that the Registrar relied on the Gestalt submissions in making the decision; prior to the decision the Registrar indicated clearly that she intended to revoke the trade mark, and after receiving the Gestalt submissions she changed her mind, which was reflected in the decision. The only intervening event was the Gestalt submissions, which raised two substantive issues. The first concerned the factual matrix, where the submissions laid the blame for the error at the feet of Allens (see [17] above). This, Foxtel accepts, was a known fact and had been exposed to the Registrar in the course of its application for revocation. Foxtel does not rely on this submission in support of its denial of natural justice submission. The second was the submission as to the construction of s 84A having regard to the secondary materials. Foxtel submits that this was new matter that influenced the Registrar’s decision, and Foxtel submits that it ought to have had an opportunity to respond to it.

55    In SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; 228 CLR 152 at [32] the High Court (Gleeson CJ, Kirby, Hayne, Callinan and Heydon JJ) said:

In Alphaone the Full Court rightly said:

“It is a fundamental principle that where the rules of procedural fairness apply to a decision-making process, the party liable to be directly affected by the decision is to be given the opportunity of being heard.  That would ordinarily require the party affected to be given the opportunity of ascertaining the relevant issues and to be informed of the nature and content of adverse material."  (emphasis added)

56    In Minister for Immigration & Border Protection v SZSSJ [2016] HCA 29; 259 CLR 180 the Court said at [83] (emphasis added):

Ordinarily, affording a reasonable opportunity to be heard in the exercise of a statutory power to conduct an inquiry requires that a person whose interest is apt to be affected be put on notice of: the nature and purpose of the inquiry; the issues to be considered in conducting the inquiry; and the nature and content of information that the repository of power undertaking the inquiry might take into account as a reason for coming to a conclusion adverse to the person.

57    The relevance of the nature and content of information that the repository of power undertaking the inquiry might take into account was explained in the footnote to that proposition in SZSSJ, which included reference to the Full Court decision in Commissioner for the Australian Capital Territory Revenue v Alphaone Pty Ltd [1994] FCA 293; 49 FCR 576 at 591 – 592 (emphasis added):

Where the exercise of a statutory power attracts the requirement for procedural fairness, a person likely to be affected by the decision is entitled to put information and submissions to the decision-maker in support of an outcome that supports his or her interests. That entitlement extends to the right to rebut or qualify by further information, and comment by way of submission, upon adverse material from other sources which is put before the decision-maker. It also extends to require the decision-maker to identify to the person affected any issue critical to the decision which is not apparent from its nature or the terms of the statute under which it is made. The decision-maker is required to advise of any adverse conclusion which has been arrived at which would not obviously be open on the known material. Subject to these qualifications however, a decision-maker is not obliged to expose his or her mental processes or provisional views to comment before making the decision in question.

58    In my view, a relevant issue for consideration by the Registrar, which was known to Foxtel prior to the Gestalt submissions, was the application of s 84A of the Act to the known facts. In its submissions in support of its application under s 84A, Allens specifically addressed this point. There can have been no doubt as to the relevant “issue”. The Gestalt submissions merely raised an aspect of the construction of s 84A that reflected an opposing view to that propounded by Foxtel. This was an issue that was obviously open on the known material.

59    Furthermore, were there to have been a denial of procedural fairness, one can readily conclude that it would not have deprived Foxtel of the possibility of a different outcome. The issue to which Foxtel points was a matter of statutory construction that the Registrar found in its favour. The language used in the decision indicates that the Registrar determined that she should consider the exercise of her discretion under s 84A(1). It will be recalled that the decision contains a finding that it is “not reasonable” to revoke the registration of the trade mark, and that the Registrar has “taken into account all of the circumstances and [found] that the discretionary power to revoke under s 84A should not be exercised in the present circumstances”. This language indicates that the Registrar did not accept the Gestalt submission that s 84A cannot apply where the error or omission lies at the feet of a person other than the Registrar, but instead applied herself to the consideration of the exercise of discretion set out in s 84A(1). In Minister for Immigration and Border Protection v WZARH [2015] HCA 40; 256 CLR 326 at [60], Gageler and Gordon JJ said that (emphasis added):

...denial of procedural fairness is established by nothing more than that failure, and the granting of curial relief is justified unless it can be shown that the failure did not deprive the person of the possibility of a successful outcome. The practical injustice in such a case lies in the denial of an opportunity which in fairness ought to have been given.

60    See also Stead v State Government Insurance Commission [1986] HCA 54; 161 CLR 141 at 145 – 147. This conclusion is reinforced by the finding, set out in section 6 below, that Foxtel has not established an error of law on the part of the Registrar.

61    Foxtel next submits that the Court ought not to accept the Registrar’s email of 31 October 2017 as reflecting the true basis for the decision. It contends that the reasons set out in the Gestalt submissions more accurately reflect the basis for the decision because of the circumstantial matters to which I have referred in [54] above, as well as the content of the conversation between Ms Evans and the Registrar of 1 November 2017. I reject that submission. Firstly, as I have noted, the email of 31 October 2017 sets out a basis for the decision that is inconsistent with the Gestalt submissions. Secondly, the acceptance by the Registrar that Gestalt’s submissions “influenced” the change of position does not advance matters beyond the proposition that the submissions led to a reconsideration of the matter by the Registrar. As she said in her letter to Unicom of 28 September 2017, had Unicom not responded, the Registrar intended to revoke the trade mark. Thirdly, I am not prepared to infer that the decision does not set out, in short form, the reasons of the Registrar, in circumstances where Foxtel chose not to seek reasons from the Registrar pursuant to s 13 of the AD (JR) Act.

5.    DECISION UNREASONABLE

5.1    The arguments

62    Foxtel contends that the making of the decision was an improper exercise of the power conferred by s 84A of the Act because it was so unreasonable that no reasonable person could have so exercised the power.

63    It submits that the Registrar intended to revoke the trade mark until the intervening event of receiving the Gestalt submissions, after which she changed her mind. The decision, viewed against that background, lacked evident and intelligible justification because Foxtel had: (a) intended to oppose the registration, and had prepared its notice of intention days in advance; (b) through Allens, attempted to file its notice of intention, and until 8 September thought it had done so; (c) had fallen victim to the failure of the eServices payment function, and had committed its own error in failing to check for a valid filing receipt (falling under 84A(2)(a)). Furthermore there was no evidence of any circumstances, whether by use of the trade mark or legal proceedings or otherwise making it appropriate not to revoke the registration within s 84A(3). Upon learning of the errors, Foxtel immediately moved to cure the problem within 11 days of the end of the opposition period. Revocation of the trade mark would not cause Unicom necessarily to lose its rights permanently, but rather would expose the trade mark application to the scrutiny of an opposition. By reason of these matters, Foxtel submits that the decision was unreasonable within the meaning of that term in Minister for Immigration and Citizenship v Li [2013] HCA 18; 249 CLR 332 at [68], Minister for Immigration and Border Protection v Singh [2014] FCAFC 1; 231 FCR 437 at [43] – [48], and Minister for Immigration and Border Protection v Stretton [2016] FCAFC 11; 237 FCR 1 at [11].

64    The Registrar submits that the only reason given by Foxtel in its request for the Registrar to consider the exercise of her discretion is that it intended to file a notice of intention, but failed to do so. The evidence shows that, after considering that request, it was not reasonable to revoke the registration. A reasonable person could come to that conclusion in the context of the statutory power in s 84A. Courts do not, she submits, lightly interfere with the exercise of this statutory discretion: Li [66], [106] – [108].

5.2    Consideration

65    Foxtel relies on ss 5(1)(e) and 5(2)(g) of the AD(JR) Act:

5 Applications for review of decisions

(1)     A person who is aggrieved by a decision to which this Act applies that is made after the commencement of this Act may apply to the Federal Court or the Federal Circuit Court for an order of review in respect of the decision on any one or more of the following grounds:

(e)     that the making of the decision was an improper exercise of the power conferred by the enactment in pursuance of which it was purported to be made.

(2)     The reference in paragraph (1)(e) to an improper exercise of a power shall be construed as including a reference to:

(g)     an exercise of a power that is so unreasonable that no reasonable person could have so exercised the power.

66    In her decision, the Registrar expresses the view that it is not reasonable to revoke the trade mark, and that she has taken into account all of the circumstances in concluding that the discretionary power to revoke under s 84A should not be exercised. Extensive reasons are not provided. This is not a fault on the part of the Registrar. Section 84A does not oblige the Registrar to give reasons, and Foxtel has not sought them under s 13(1) of the AD (JR) Act. In such circumstances, a supervising court must focus on the outcome of the exercise of power in the factual context presented and assess, for itself, its justification or intelligibility, bearing in mind that it is for the repository of the power – here the Registrar – and it is not for the Court to exercise the power: Singh at [45]. Indicia of legal unreasonableness must be found in the scope, subject, and purpose of the particular statutory provisions in any given case: Singh at [48].

67    The scheme of the Act reflects an intention on the part of the legislature to ensure that the register be “pure”, as said in Health World by French CJ, Gummow, Heydon and Bell JJ at [22]. This favours the accommodation of those parties who wish to exercise their right under s 52 of the Act to oppose a trade mark application. On the other hand, the Act and Regulations provide deadlines for the filing of documents in relation to oppositions to ensure their timely progression and resolution; see, for example ss 52 and 68 of the Act, and Regulations 5.6 and 7.1. Furthermore, s 88 provides an opportunity for an aggrieved person to seek rectification of the Register by the cancellation of the trade mark.

68    Before the Registrar was evidence of the events that led to the failure to file the notice of intention within the prescribed time. She was notified that Foxtel had given instructions to file the notice on the last day available and that Allens had attempted to file the document electronically, but had failed to notice the document had not been filed. These events were characterised in the Gestalt submissions as being “a failure on the part of the attorneys to complete and check the process”. Foxtel characterised the failures as “errors”.

69    Section 84A(1) requires that the Registrar be “satisfied”: (a) that the trade mark should not have been registered, taking account of all the circumstances that existed when the trade mark became registered, whether or not she knew then of their existence, and (b) that it is reasonable to revoke the registration, taking account all of the circumstances. Subsection 84A(2)(a) provides, relevantly, that the circumstances to be taken into account in s 84A(1)(a) include any errors, including errors of judgment, or omissions that led directly or indirectly to the registration. Subsection 84A(3) provides that the circumstances to be taken into account under subsection 84A(1)(b) include: any use that has been made of the trade mark; past, current, or proposed legal proceedings relating to the trade mark; other action taken in relation to the trade mark; and any special circumstances making it appropriate to revoke or not revoke the registration. Subsection 84A(6) provides that the Registrar does not have a duty to consider whether to revoke the registration under the section.

70    The Explanatory Memorandum to the Intellectual Property Amendment Bill 2006 (Cth), which introduced subdivision C to Part 8 of the Act, provides in relation to s 84A(6):

47.    Subsection 84A(6) clarifies that the Registrar does not have a duty to consider whether to revoke a registration, whether or not the Registrar is requested to do so.

48.    This means that third parties will not have a right to urge the Registrar to consider revocation of a trade mark in particular situations. Revocation of registration under section 84A is not intended to provide a way of settling competing claims to ownership of a trade mark. This can be pursued through the courts, with section 86 of the Trade Marks Act providing for the Federal Court to cancel a registered trade mark. Nor is it intended to be a mechanism for parties to file de facto oppositions after a trade mark has been registered. This provision is only intended to provide an administrative mechanism to undo a registration where it was wrongly registered.

49.    This subsection will not prevent third parties bringing potentially invalid registrations to the Registrar’s attention. Nor will it prevent the Registrar from considering such submissions and acting on them. It clarifies that the Registrar is under no duty to consider any such input from third parties, so that such parties are not in a position to insist that the Registrar acts on their information. This is reasonable given the other remedies that such parties can access.

71    The other remedies to which the Explanatory Memorandum refers includes the opportunity on the part of a third party, if aggrieved, to seek revocation of the trade mark pursuant to s 88 of the Act.

72    Taken together, the terms of s 84A leave a broad scope for the Registrar to exercise her discretion. By contrast, s 84B provides that the Registrar must revoke the registration of a trade mark if: (a) a notice of opposition was filed in accordance with s 52(2) (or an application for an extension of time to file a notice of opposition was made in accordance with the regulations); (b) the Registrar failed to take account of the opposition in deciding to register the mark; and (c) the Registrar becomes aware of the failure within 1 month after the notice was filed.

73    In my view, the decision of the Registrar to decline to revoke the trade mark fell within the decisional freedom to exercise her discretion granted by the terms of the Act and the factual context of the decision (Stretton at [7] (Allsop CJ)), and was not unreasonable in the sense for which Foxtel contends. The three matters specifically drawn to the attention of the Registrar by Foxtel prior to the decision were: the failure of the eServices lodgement to be accepted, the failure on the part of Allens to obtain a receipt for the transaction and thereby detect the failure, and the decision on the part of Foxtel to instruct Allens to lodge the notice of intention on the last day available for it to do so. By indicating in the decision that she had considered “all of the circumstances”, the Registrar informed Foxtel that she had taken into account the mandatory considerations set out in ss 84A(2)(a) and (3). The Explanatory Memorandum at [48], quoted above, makes plain that the legislative intention underlying s 84A is not to provide a mechanism for parties to file de facto oppositions after a trade mark has been registered. Furthermore, Foxtel is not deprived of the opportunity to seek the revocation of the trade mark by bringing an application pursuant to s 88 of the Act. In these circumstances the exercise of the power by the Registrar was not so unreasonable that no reasonable person could have so exercised it.

74    Accordingly, this ground of the application for review has not been established.

6.    ERROR OF LAW

75    Foxtel relies on s 5(1)(f) of the AD(JR) Act:

5 Applications for review of decisions

(1)     A person who is aggrieved by a decision to which this Act applies that is made after the commencement of this Act may apply to the Federal Court or the Federal Circuit Court for an order of review in respect of the decision on any one or more of the following grounds:

(f)     that the decision involved an error of law, whether or not the error appears on the record of the decision.

76    Foxtel contends that the decision involved error of law because the Registrar construed s 84A too narrowly, including with respect to the section’s purported purpose and intended scope.

77    This ground of review is based on the premise, summarised at [61] above, that it may be inferred that the Registrar adopted the construction of s 84A propounded in the Gestalt submissions. I have rejected that submission. The decision makes apparent that the Registrar did not adopt this construction. For the avoidance of doubt, it may be accepted that the language of s 84A does not suffer from the constraints for which the Gestalt submissions contend. Specifically, the language of s84A provides that the Registrar may revoke the registration of a trade mark if he or she is satisfied of the matters set out in s 84A(1), having regard to at least the circumstances identified in subsections (2) and (3). These circumstances are not confined to situations where it is the Registrar who makes an error or omission. However, the Registrar did not make this error. This ground has not been established.

7.    DISPOSITION

78    The application must be dismissed with costs.

Associate:

Dated:    1 May 2019